SHIBUYA, Yu et al.

Patent Trials and Appeals Board

Dec 18, 2019

15128454 - (D) (P.T.A.B. Dec. 18, 2019)

UNITED STATES PATENT AND TRADEMARK OFFICE
UNITED STATES DEPARTMENT OF COMMERCE
United States Patent and Trademark Office
Address: COMMISSIONER FOR PATENTS
P.O. Box 1450
Alexandria, Virginia 22313-1450
www.uspto.gov
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
15/128,454 09/23/2016 Yu SHIBUYA 90606.1448/in 8654
54071 7590 12/18/2019
YAMAHA
C/O KEATING & BENNETT, LLP
1800 Alexander Bell Drive
SUITE 200
Reston, VA 20191
EXAMINER
GOODEN JR, BARRY J
ART UNIT PAPER NUMBER
3616
NOTIFICATION DATE DELIVERY MODE
12/18/2019 ELECTRONIC
Please find below and/or attached an Office communication concerning this application or proceeding.
The time period for reply, if any, is set in the attached communication.
Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
following e-mail address(es):
JKEATING@KBIPLAW.COM
sfunk@kbiplaw.com
uspto@kbiplaw.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte YU SHIBUYA and TAKASHI KAIEDA
____________

Appeal 2019-003397
Application 15/128,454
Technology Center 3600
____________

Before JENNIFER D. BAHR, MICHELLE R. OSINSKI, and
SEAN P. O’HANLON, Administrative Patent Judges.

OSINSKI, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellant1 appeals under 35 U.S.C. § 134(a) from the Examiner’s
decision rejecting claims 7, 11, and 12 under 35 U.S.C. § 102(a)(1) as
anticipated by Marcacci (US 2005/0167174 A1, pub. Aug. 4, 2005).2 We
have jurisdiction over the appeal under 35 U.S.C. § 6(b).
We AFFIRM.

1 We use the term “Appellant” to refer to “applicant” as defined in 37 C.F.R.
§ 1.42. Appellant identifies the real party in interest as Yamaha Hatsudoki
Kabushiki Kaisha. Appeal Br. 2.
2 Claims 1–6 and 8 are canceled. Appeal Br. 8 (Claims App.). Claims 9
and 10 are objected to as being dependent upon a rejected base claim, but,
according to the Examiner, would be allowable if rewritten in independent
form. Final Act. 3.
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Application 15/128,454

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THE CLAIMED SUBJECT MATTER
Claim 7, the sole independent claim, is reproduced below and is
representative of the claimed subject matter on appeal.
7. A saddle riding type vehicle comprising:
a vehicle body frame;
a pair of front wheels;
a linkage that connects the pair of front wheels to the
vehicle body frame;
a lock that locks the linkage by preventing operation of
the linkage and unlocks the linkage by allowing the linkage to
operate;
a controller that controls locking and unlocking of the
linkage by the lock; and
a notifier that notifies a rider that the lock has locked the
linkage when both the vehicle travels at least at a prescribed
vehicle speed and the lock has locked the linkage.

OPINION
In rejecting claim 7, the Examiner finds that Marcacci discloses a
vehicle including, in relevant part, “a notifier (speed limited motor,
depressed button or warning light) that notifies a rider when the vehicle
travels at least at a prescribed vehicle speed and the lock has locked the
linkage (Reference is made to Paragraphs 0051–0056).” Final Act. 3.3 The
Examiner explains that
the safety device and/or speed limited motor (Reference is
made to Paragraph 0051) through its operation, notifies the
rider that the linkage is locked by limiting the motor speed,
which meets both of the claimed conditions. The driver is
ultimately notified, either directly or indirectly, that the linkage

3 In the Answer, the “Examiner concedes [that] the warning light and button
of Marcacci do not meet the limitations under 35 U.S.C. [§] 102, but
maintains [that] the speed limited motor meets all of the limitations as
detailed in the Final Office Action.” Ans. 6.
Appeal 2019-003397
Application 15/128,454

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is locked when both the set speed is reached and the linkage is
locked through the abnormal change in operation of the vehicle.
Ans. 4.
Appellant argues that Marcacci’s motor does not constitute a notifier
as claimed. See Appeal Br. 4–5; Reply Br. 2–7. In particular, Appellant
asserts that Marcacci’s maximum motor rotation speed “could be limited for
a variety of other reasons including various other engine control purposes,
e.g., a well-known motor protection device that limits the maximum speed
of rotation of the motor when an abnormal increase of temperature of the
motor is detected.” Appeal Br. 5. According to Appellant, “the Examiner’s
assumption that a rider would not only recognize that the maximum rotation
speed of the motor is being limited (i.e., how the safety device functions),
but also positively attribute this engine control to the locking element 3
being closed is speculative at best.” Id. at 4. We are not persuaded by these
arguments.
Marcacci discloses that “locking element 3, locking the position of the
stop element with respect to the frame of the vehicle 100, prevents the
movements of the articulated kinematism 42, 41, 37, 36 and therefore the
rolling of the vehicle.” Marcacci ¶ 29 (boldface omitted). Marcacci also
discloses that “a safety device (not shown) is foreseen to limit the maximum
speed of rotation of the motor with locking element 3 closed, in the case in
which the driver forgets to disengage the anti-rolling device after setting
off.” Id. ¶ 51 (boldface omitted). In other words, if a user rides off on the
vehicle without opening locking element 3, Marcacci’s safety device limits
the maximum rotation speed of the motor. However, Appellant does not
point to, nor do we discern, any disclosure in Marcacci that the maximum
rotation speed of the motor is limited for other reasons. In this regard,
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Application 15/128,454

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Appellant’s speculative assertions amount to nothing more than attorney
argument unsupported by evidence and, thus, are entitled to little, if any,
weight. In re Geisler, 116 F.3d 1465, 1470 (Fed. Cir. 1997); see also In re
Pearson, 494 F.2d 1399, 1405 (CCPA 1974) (An attorney’s arguments in a
brief cannot take the place of evidence.).
Moreover, even assuming arguendo that “other conditions, such as
faulty spark plugs, electrical connections, fuel, etc., could be the proximate
cause of the maximum speed of rotation of the motor being limited” (Reply
Br. 7), the Examiner correctly points out that there is nothing recited in the
claim that would preclude limiting maximum motor rotational speed for
other reasons in addition to the lock being engaged. See Ans. 5 (explaining
that “[t]he open-ended claim would not preclude one or more conditions
from corresponding to the speed limited motor situation”). It is well
established that limitations not appearing in the claim cannot be relied upon
for patentability. See In re Self, 671 F.2d 1344, 1348 (CCPA 1982).
For the above reasons, Appellant does not apprise us of error in the
Examiner’s finding that Marcacci anticipates the subject matter of claim 7.
Accordingly, we sustain the rejection of claim 7, and its dependent claims 11
and 12, for which Appellant relies on the same arguments (Appeal Br. 7),
under 35 U.S.C. § 102(a)(1) as anticipated by Marcacci.

CONCLUSION
In summary:
Claims
Rejected 35 U.S.C. § Reference(s)/Basis Affirmed Reversed
7, 11, 12 102(a)(1) Marcacci 7, 11, 12
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Application 15/128,454

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No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R.
§ 1.136(a)(1)(iv).

AFFIRMED